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Patent FAQs

What is a Patent?

A patent is a set of exclusive personal property rights granted by the federal government giving the owner of the patent the right to exclude others from making, using, or selling the invention within the United States during the term of the patent. In essence, the U.S. government grants the patent owner a monopoly for the patented subject matter for a limited time in exchange for a full disclosure of the invention. After the term of the patent has expired, the public is free to make, use, or sell the invention without fear of committing patent infringement. It is important to note that a patent does not provide the owner with the right to make, use, or sell the invention but rather provides the owner with the right to prevent others from doing so.

A patent is different from other types of intellectual property in that a patent is intended to protect the utility or function of the subject matter. By contrast, copyright is intended to prevent the unauthorized copying of an expression or thought captured in a fixed medium. Trademarks are intended to protect against unfair competition that may result from the unauthorized use of a word or symbol that identifies a specific sources of goods or services, such as AMAZON® and BEST BUY®.

What can be patented?

Under the law, a patent may be obtained for any new and useful process, machine, manufacture, or composition of matter. Under certain conditions any new and useful improvement of a process, a machine, a manufacture, or a composition of matter may also be patentable. Abstract ideas, natural phenomena, and laws of nature are not eligible for patent protection. There is a great deal of legal discussion and uncertainty with regards to whether certain types of inventions such as processes implemented via software, business methods, and the automation of manual processes are patentable or not.

My idea is patentable, does that mean I can get a patent?

Not necessarily. Under the law, a patent may be granted if the idea is novel and nonobvious. Novel means that the idea is new and has never been done before. An invention will be considered novel if the subject matter does not appear in a previously issued patent, previously filed patent application, magazine, technical journal, book, newspaper, or any other publicly available source of information. If an item has been used or sold previously it will not be considered novel.

Nonobvious is a more complicated matter and means that the idea is not obvious in view of what has been done before. Nonobviousness is a legal standard that considers a “person of ordinary skill in the art” and whether or not that person would find the invention obvious in view of the available information at the time of invention.

Does a U.S. patent provide protection outside of the U.S.?

No. A U.S. patent only gives the owner of the patent the right to exclude others from making, using, offering for sale, selling, or importing into the U.S. the patented subject matter.

How do you obtain foreign patent protection?

Much like the U.S., a patent application must be filed in each country where patent protection is desired. There is no world-wide patent.

What does patent pending mean?

Patent pending means that a patent application has been filed and is pending before the United States Patent and Trademark Office (USPTO). Marking a product as “patent pending” after a patent application has been filed may act as a deterrent to competitors that might otherwise consider copying the product.

What is the difference between a provisional patent application and a nonprovisional patent application?

A provisional patent application is a type of patent application that is filed with the United States Patent and Trademark Office (USPTO) that acts as a sort of place holder. A provisional patent application is never examined and cannot mature into a patent. Instead, a provisional patent application provides a period of twelve months to submit a nonprovisional application. If nonprovisional patent application is filed within the twelve month period, the nonprovisional patent application is treated as thought it was filed on the same date as the provisional patent application. A provisional patent application is an informal disclosure of an invention and as a result often costs significantly less to prepare than a nonprovisional patent application. Due to its informal nature, a provisional application can be prepared and filed with the USPTO relatively quickly. This is important since the U.S. is a “first to file” country, meaning that the first party to file a patent application is given the right to pursue a patent. Once filed, a provisional patent application allows the applicant to use the phrase “Patent Pending.”

A nonprovisional patent application is a formal patent application that is examined by the USPTO and may result in a patent. A nonprovisional patent application meets all of the requirements set out by the USPTO and includes a full and complete disclosure of the invention, a set of patent claims, and if necessary, a set of drawings. Due to the formality associated with a nonprovisional patent application and the fact that it defines the basis for what any resulting patent may cover, the cost to prepare a nonprovisional patent application is greater than that of a provisional patent application.

Who can be named on a patent?

Only a person who conceived of at least one patentable element in the patent claims can be named as an inventor on a patent application. A person who only acts under the direction of an inventor to help reduce the element to practice is not considered to be an inventor. This is important because failure to properly list each inventor in the patent application can result in the cancellation of an issued patent. Absent an obligation to assign their rights, each inventor is considered to be an applicant and owns a full interest in the patent application.

Recent changes to U.S. law now allow for a business to be named as the applicant on a patent application. A business may be named as the applicant when the inventor(s) is under an obligation to assign or has already assigned their rights in the invention over to the business.

Who owns the patent?

For applications filed on or after September 16, 2012, the original applicant is presumed to be the initial owner of an application for an original patent. For applications filed before September 16, 2012, the ownership of the patent initially vests in the named inventors of the invention of the patent.

Therefore, if a business is to own the patent it is important to obtain an assignment from each named inventor. Employment contracts are a useful tool to inform an employee of their obligation to assign their rights in an invention over the business. Similarly, agreements with contract employees should contain a clause informing the contractor of the obligation to assign their rights over to the business.
Since a patent is considered personal property, community property laws may come into play when determining ownership of a patent. For example, an inventor’s spouse may be considered to own a share of the patent. Therefore, under certain circumstances, it may be necessary to obtain an assignment from the inventor’s spouse to prevent any potential questions of ownership.

What is the process to obtain a patent?

To obtain a patent it is necessary to file a nonprovisional patent application with the U.S. Patent and Trademark Office (USPTO). Every patent application includes a detailed description of the invention that describes the invention and teaches others what the invention is, a set of patent claims that define the scope that the applicant believes should be patented, and a set of drawings that illustrate various features of the invention. It is important to note that the law dictates that nothing can be added to the patent application after it has been filed. Therefore, it is important that the detailed description is as full and complete as possible at the time of filing. Once the patent application has been drafted, it is filed with the USPTO.

The patent application is then assigned to an examiner who is responsible for evaluating the patent application to determine whether or not the patent application should be allowed to issue as a patent. This process is called prosecution and it commonly takes between twelve and twenty-four months before the examiner begins prosecution. It is the examiner’s job to evaluate the patent application according to various criteria including whether or not the patent application is directed towards patentable subject matter, the claims are novel and nonobvious in view of the prior art, and that the invention has been fully described to enable the invention to be practiced by others.

If the examiner finds the patent claims to be patentable, a notice of allowance will be issued. If the examiner determines that the patent claims are not allowable, however, then an office action is issued explaining why the examiner believes the claims should be rejected. A response is typically filed to either point out any errors made by the examiner or to amend the patent claims to more distinctly recite the subject that is sought to be patented. In essence, this is a negotiation process between the applicant and the examiner.

After the response is filed, the examiner re-evaluates the patent application and makes a determination about patentability. If the examiner is satisfied then a notice of allowance may be issued and if the examiner is not satisfied, then a final office action is typically issued. Although a final office action technically ends the prosecution phase, there are several options available to continue prosecution of the patent application. Which option is chosen is highly dependent upon the specific facts of the case.

At the end of prosecution the patent application is either abandoned or allowed. If the patent application is allowed, then it is necessary to pay an issue fee before the patent is allowed to issue and take force. If the patent application is abandoned, then a patent will not issue. Not every patent application will be allowed and it is very difficult to estimate which patent application will be allowed and which will not.

What is a patentability search?

A patentability search, or a prior art search, is a search of the publicly available information that may pertain to the subject matter of the patent application. Most often, a patentability search will include a search through the U.S. Patent and Trademark Office records for issued patents and published patent applications. Depending on the needs of an individual client, a patentability search may be expanded to include foreign patents and published patent applications, published articles, internet searches, or many other publicly available sources of information. The goal of a patentability search is to determine if the subject matter of the invention is already known or if similar concepts exist. For example, if a patentability search turns up information that the invention already exists, then it most likely doesn’t make sense to incur the cost of preparing and filing a patent application. Alternatively, if a patentability search turns up similar concepts but nothing exactly like the invention, then that information can be used to draft the patent application to more specifically focus on the distinguishing features of the invention in view of the search results.

Does the invention have to be completed or a prototype to file a patent application?

No. A prototype or a completed product is not required to file a provisional or nonprovisional patent application. The requirement to file a patent application is that the invention be fully conceived and reduced to practice such that the disclosure of the patent application is able to explain to one of ordinary skill how to make, use, or otherwise practice the invention.

How long does a patent last?

A U.S. utility patent has a term of 20 years from the date the application for patent was filed. After the patent term expires, anyone is free to make, use, sell, or import the invention.

After a patent issues then what?

To keep a patent in force it is necessary to pay a maintenance fee before the end of 3.5, 7.5, and 11.5 years after the patent issued. Failure to pay the maintenance fee will result in the cancellation of the patent.

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